On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 103913
Time of Filing 2021-07-07 09:08:36
Disputed domain name ROLANDGARROS.WORLD
Case Administrator
Name Denisa Rihova
Complainant
Organization FEDERATION FRANCAISE DE TENNIS (FFT)
Authorized Representative
Organization NAMESHIELD S.A.S.
Respondent
Name antonio torres
Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
Identification of rights
The Complainant is, inter alia, registered owner of the following trademark containing a word elements "ROLAND GARROS":

- ROLAND GARROS (word), International (WIPO) Trademark, filing date 1 April 1981, trademark no. 459517, registered for goods and services in classes 3, 4, 7, 8, 9, 12, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 35, 38, and 41;

besides other national and international trademarks consisting of the "ROLAND GARROS" denomination.
(collectively referred to as "Complainant's trademarks").

The Complainant also owns numerous domain names under various TLDs consisting of the "ROLAND GARROS " denomination or incorporating the same.
Factual Background
COMPLAINANT:

Founded in 1920, the Complainant promotes, organizes and develops tennis in France. The Complainant is well known for organizing major tennis tournaments such as the Internationaux de France de Tennis at Roland Garros also called “The French Open”. It is the most important tournament of the tennis season on clay and the only Grand Slam still being held on that surface.

DISPUTED DOMAIN NAME:

The disputed domain name <rolandgarros.world> was registered on 27 June 2021 and is held by the Respondent.

The domain name website (i.e. website to which the disputed domain name resolves) is currently not genuinely used as it contains only automatically generated links to third parties' websites, some of them being linked to tennis. It also reads "Get This Domain".

The Complainant seeks transfer of the disputed domain name to Complainant.
 
The Parties' contentions are the following:

COMPLAINANT:

CONFUSING SIMILARITY

- The Complainant states that the disputed domain name is identical to Complainant's trademarks as the disputed domain name contains the Complainant's trademarks in its entirety.

- The Complainant contends that addition of the gTLD “.WORLD” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant's trademark.

The Complainant refers to previous domain name decisions concerning the confusing similarity between Complainant's trademarks and various domain names.

NO RIGHTS OR LEGITIMATE INTERESTS

- The Respondent has not been commonly known by the disputed domain name. Neither the Complainant has been authorized, permitted or licensed the Respondent to use its trademarks in any manner. The Respondent has no connection or affiliation with the Complainant whatsoever. On this record, Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it.

- Furthermore, the domain name website is not genuinely used which confirms that the Respondent has no demonstrable plan to use the disputed domain name.

- The Complainant refers to previous domain name decisions contending that the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests; once such prima facie case is made, the burden shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.

BAD-FAITH REGISTRATION AND USE

- Seniority of Complainant's trademarks predates the disputed domain name registration and such trademarks are well known in relevant business circles. The Respondent can be considered to be aware of the Complainant's trademark when registering the domain name due to well-known character thereof.

- The disputed domain name is inactive. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name and claims that any use of disputed domain name would be likely illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s Trademark rights.

- The Complainant refers to previous domain name decisions contending that the Complainant's trademarks enjoy high level of notoriety and well-known character.

The Complainant presents the following evidence which has been assessed by the Panel:
- Information about the Complainant and its business;
- Excerpts from a trademark database regarding Complainant's trademarks;
- Excerpts on the disputed domain name from WHOIS database;
- Screenshots of the disputed domain name website; and
- Google results for a phrase "ROLAND GARROS".

RESPONDENT:
The Respondent has not provided any response to the Complaint.
Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
RIGHTS

The disputed domain name and the Complainant’s trademarks are identical.

For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the ".world") must be disregarded under the confusing similarity test as it is a necessary technical requirement of registration.

Therefore, the Panel has decided that there is identity in this case, it also concludes that the Complainant has satisfied paragraph 4(a)(i) of the UDRP.


NO RIGHTS OR LEGITIMATE INTERESTS

Based on general Internet search, the Respondent is not commonly known by the disputed domain name.

In addition, given the fact that the disputed domain name has not been genuinely used (as it was merely parked and contains only automatically generated content), the Panel concludes that there is no indication that the disputed domain name was intended to be used in connection with a bona fide offering of goods or services as required by UDRP.

Consequently, the evidentiary burden shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. However, the Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a) (ii) of the Policy).


BAD FAITH

The Panel finds it grounded that the Respondent registered and used the disputed domain name in bad faith, namely, by blocking the domain name for itself and not using it for any legitimate purpose.

Such circumstances and also an invitation "Get This Domain" available on the domain name website both indicate that the Respondent has either registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant.

For the reasons described above and since the Respondent failed to provide any explanation in this regard, the Panel contends, on the balance of probabilities, that the disputed domain name has been registered and is being used by the Respondent in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
ROLANDGARROS.WORLD Transferred to the Complainant
Panellists
Name JUDr. Jiří Čermák
Date of Panel Decision 2021-08-16
Publication of the Decision
Publish the Decision